The University of Texas System Rules and Regulations of the Board

The University of Texas System

Rules and Regulations of the Board of Regents Rule: 90101

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1. Title

Intellectual Property

2. Rule and Regulation

Sec. 1 Preamble. This intellectual property Rule is intended to serve

the public good, promote partnerships with the private sector,

encourage innovation, promote the engagement of faculty, staff,

and students in research, and foster economic development.

The Board of Regents recognizes the high importance of

discovery commercialization as a core mission. U. T. System

recognizes that it will attract more collaborative research

supported by industry if timely and efficient processes exist to

manage intellectual property.

This Rule is intended to be adaptable to the highly varied

circumstances that characterize the private sector and the

portfolio of research at U. T. System institutions. In all cases,

U. T. System institutions will strive to enable the ease of

intellectual property creation, protection, management, and

transfer to the private sector and society within an environment

that promotes the highest quality and integrity of academic

activity, teaching, and research.

U. T. System is guided by the following fundamental principles

on intellectual property:

1.1 The successful deployment of intellectual property

developed through teaching, research, discovery,

creative activities, and application of knowledge, whether

through sponsored research, licensing, or other types of

transactions or arrangements, allows for knowledge and

technology to be disseminated to benefit the broad public

and comports with the mission of the U. T. System;

1.2 Sponsored research is very important to the vitality and

competitiveness of U. T. System institutions, the State of

Texas, and our nation. All U. T. System institutions shall

(a) encourage and strengthen university-industry

partnerships, (b) efficiently and expeditiously manage

intellectual property created from these partnerships, and

circumstances and needs of potential industry sponsors;

1.3 U. T. System institutions should expect that when

industry is underwriting sponsored research, industry

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commences negotiations with the expectation of speed in

the execution of critical agreements, clear financial

outcomes, and ownership rights in, or appropriate access

to, intellectual property resulting from the work;

1.4 Sponsored research is frequently tightly integrated with

the educational mission at many U. T. System institutions

but must not abridge publication and research rights,

impinge upon the dissemination of research results,

including student theses and dissertations, nor diminish

an environment of academic and research integrity;

1.5 The primary research-related duties of members of the

faculty at U. T. System institutions are to teach, study,

investigate, discover, create, disseminate, develop

professionally, and infuse new knowledge into their

classes and student interaction;

1.6 Commercialization of technology enhances the reputation

of the U. T. System and enables transformation of

knowledge into the marketplace; and

1.7 Compliance with all applicable federal laws and

regulations, the Texas Constitution, and applicable laws

of the State of Texas is essential for successful U. T.

System technology commercialization.

Sec. 2 Ownership of Intellectual Property. Except as set forth in

Section 5, the Board of Regents automatically owns the

intellectual property created by individuals subject to this Rule,

yet recognizes the importance of discovery commercialization.

In appropriate circumstances concerning intellectual property

resulting from research supported by (a) an entirely private,

nongovernmental grant or contract with a nonprofit or for-profit

entity, or (b) an entirely private gift or grant to the U. T. System

or any U. T. System institution, as set forth in Section 12.1, the

U. T. System or a U. T. System institution may enter into an

agreement to transfer or grant appropriate access to the Board

of Regents’ rights in intellectual property to third parties. For

purposes of this Rule, intellectual property includes, but is not

limited to, any invention, discovery, creation, know-how, trade

secret, technology, scientific or technological development,

research data, work of authorship and software, regardless of

whether subject to protection under patent, trademark,

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Sec. 3 Individuals Subject to this Rule. While students are governed

by Section 6, this Rule applies to all persons employed by the

U. T. System or any U. T. System institution, as well as to

anyone using the facilities or resources of the U. T. System or

any U. T. System institution. All individuals subject to this Rule

must assign, and do hereby assign, their rights in such

intellectual property to the Board of Regents, and such

individuals shall promptly execute and deliver all documents and

other instruments as are reasonably necessary to reflect the

Board of Regents’ ownership of such intellectual property. A

creator of intellectual property owned by the Board of Regents

has no independent right or authority to convey, assign,

encumber, or license such intellectual property other than to the

Board of Regents. U. T. System institutions may promulgate

institutional rules, regulations, or policies defining the course

and scope of employment for persons or classes of persons and

specifying that authorized outside employment is or is not within

an employee’s course and scope of employment.

Sec. 4 Intellectual Property Subject to this Rule. Intellectual property

(a) developed within the course and scope of employment of the

individual, (b) resulting from activities performed on U. T.

System time or with support of state funds, or (c) resulting from

using facilities or resources owned by the U. T. System or any

U. T. System institution (other than incidental use) is owned by

the Board of Regents.

Sec. 5 Intellectual Property Not Subject to this Rule. Intellectual

property developed or created by a U. T. System employee

outside the course and scope of employment of the individual

that is developed or created on his/her own time and without the

support of the U. T. System or any U. T. System institution or

use of U. T. System facilities or resources, is the exclusive

property of the creator.

Sec. 6 Students and Intellectual Property. A student enrolled at a U. T.

System institution, such as in an undergraduate or graduate

degree program or certificate program, including a postdoctoral

and predoctoral fellow, owns the intellectual property he or she

creates (a) in courses, (b) during extracurricular activities, and

institutions commonly provided for a student’s use and for which

a student has paid tuition and fees, unless:

6.1 The student is also an employee of the U. T. System or

any U. T. System institution and the intellectual property

is developed within the course and scope of his or her

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employment, in which case the provisions of this Rule

relating to employees shall apply;

6.2 The student works on a work-for-hire or institutional

project as described by Section 8, in which case

Section 8 governs that work;

6.3 The student participates in a research project where any

intellectual property created under that project has

already been committed to, or encumbered by an

agreement with, a governmental, philanthropic, corporate

or other sponsor, including a sponsor as described in

Section 12.1; or

6.4 The student jointly creates the intellectual property with a

non-student, in which case this Rule (other than Section

6) and applicable law dictate ownership of the intellectual

property as if the student was a non-student described in

Section 3.

Sec. 7 Interest in Certain Copyrights. Notwithstanding Section 2 but

subject to Section 12, the Board of Regents will not assert an

ownership interest in the copyright of scholarly or educational

materials, artworks, musical compositions, and literary works

related to the author's academic or professional field, regardless

of the medium of expression. Such creators are encouraged to

manage their copyrights in accordance with the guidelines

concerning management and marketing of copyrighted works

consistent with applicable institutional policies.

As the Board of Regents has done historically, as reasonably

required for the limited purpose of continuing an institution’s

scheduled course offerings, the Board of Regents retains for

one year following the loss of a course instructor’s services a

fully paid-up, royalty-free, nonexclusive worldwide license to

use, copy, distribute, display, perform, and create derivative

works of materials prepared by the instructor (including lectures,

lecture notes, syllabi, study guides, bibliographies, visual aids,

images, diagrams, multimedia presentations, examinations,

web-ready content, and educational software) for use in

teaching a course.

Sec. 8 Works for Hire and Institutional Projects. Notwithstanding any

provisions of Sections 6 or 7 to the contrary, the Board of

Regents shall have sole ownership of all intellectual property

created by (a) an employee, student, or other individual or entity

commissioned, required, authorized, or hired specifically to

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produce such intellectual property by the U. T. System or any

U. T. System institution, and (b) an employee, student, or other

individual as part of an institutional project. The provisions of

Section 11.5 shall not apply to intellectual property governed by

this Section unless approved by the institution or U. T. System

Administration in a written agreement.

Sec. 9 Use of Research Data. Research data or results created by an

employee are owned by the Board of Regents and except to the

extent that rights to such research data are contractually

assigned or licensed to another by the Board of Regents, the

creator shall have a nonexclusive license to use such data for

patient care, teaching, scholarly, and other academically related

purposes and nonprofit research, provided such activities are

within the scope of the employee's employment.

Sec. 10 Use of Facilities and Resources. Other than in connection with

student-owned intellectual property governed by Section 6, U. T.

System and U. T. System institution facilities and resources may

not be used (a) to create, develop, or commercialize intellectual

property outside the course and scope of employment of an

individual, or (b) to further develop or commercialize intellectual

properties that have been released to an inventor by the Board

of Regents under Section 11.2, except as the institution's

president may approve in writing where the U. T. System retains

an interest under the terms of the release.

Sec. 11 Invention Disclosure and Commercialization.

11.1 Determination of the Board of Regents’ Interest. Before

intellectual property owned by the Board of Regents is

disclosed to any party outside the U. T. System, to the

public generally, or for commercial purposes, and before

publishing same, the creator shall submit a reasonably

complete and detailed invention disclosure of such

intellectual property to the president (or designee) of his

or her institution for determination of the Board of

Regents’ interest. The institution will regularly and

promptly communicate with the creator during this

decision-making process and commercialization shall not

proceed until that decision is made.

11.2 Election Not to Assert Ownership Interest. If the

institution’s president elects not to assert the Board of

Regents’ ownership interest, the institution’s president

shall notify the U. T. System Office of General Counsel

and the primary creator in writing within 20 business days

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after the decision is made that the institution will release

the intellectual property to the creator, except where

prohibited by law or contractual obligations or

requirements. Thereafter, the creator will be free to

obtain and exploit a patent or other intellectual property

protection in his or her own right and the U. T. System

and U. T. System institutions shall not have any further

rights, obligations, or duties with respect thereto except

that, in appropriate circumstances, the institution’s

president may elect to (a) retain income rights, and (b)

impose certain limitations or obligations, including, but

not limited to, a nonexclusive license for the creator, U. T.

System, and any U. T. System institution to use the

released invention for patient care, teaching, scholarly,

and other academically related purposes, nonprofit

research, and to comply with United States government

reporting and license requirements.

11.3 Later Release of Invention. Except where prohibited by

law or contractual obligations or requirements, the

institution’s president may elect to release an invention to

its creator at any time after asserting the Board of

Regents’ ownership interest, with notice to the U. T.

System Office of General Counsel; however, such

release must include provisions for the recovery by U. T.

System of any patent and licensing expenses as well as

the retention of income rights by U. T. System, and may

include certain limitations or obligations, including those

set forth in Section 11.2.

11.4 Protection and Commercialization of Intellectual Property.

With respect to intellectual property in which the Board of

Regents asserts an interest, the institution’s president, or

his or her designee, shall decide how, when, and where

the intellectual property is to be protected and

commercialized. The institution may contract with outside

counsel for legal services with the prior consent of the

Vice Chancellor and General Counsel and, if required by

law, the approval of the Attorney General.

11.5 Reimbursement of Licensing Costs and Allocation of

Income. In those instances where the U. T. System or

any U. T. System institution licenses rights in intellectual

property to third parties, the costs of licensing, including,

but not limited to, the costs to operate and support a

technology transfer office and the costs of obtaining a

patent or other protection for the property on behalf of the

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Board of Regents must first be recaptured from any

royalties or other license payments received by the U. T.

System or any U. T. System institution. The remainder of

any such income (including, but not limited to, license

fees, prepaid royalties, minimum royalties, running

royalties, milestone payments, and sublicense payments)

shall be divided as follows:

30-50% to creator(s), and

50-70% to U. T. System institutions.

The U. T. System or the U. T. System institution shall

decide on a case-by-case basis the allocation of income

within these ranges for all creators, with the remainder to

be disbursed to and/or retained by the U. T. System or

the applicable U. T. System institution. A creator may,

however, disclaim his/her interest in such income, in

which case the institution shall receive and/or retain the

creator’s share and shall decide, in its sole discretion, if,

how and when to disburse such income. Income received

and/or retained by the U. T. System or any U. T. System

institution from any intellectual property shall be used by

the U. T. System institution where the intellectual

property originated.

Sec. 12 Sponsored Research.

12.1 Private Sources. Intellectual property resulting from

research supported by private sources is owned by the

Board of Regents. However, with respect to intellectual

property resulting from research entirely supported by

(a) a private, nongovernmental grant or contract with a

nonprofit or for-profit entity, or (b) a private gift or grant to

the U. T. System or any U. T. System institution, if

otherwise permitted by this Rule, applicable law and

Section 12.3, the U. T. System and U. T. System

institutions are permitted and encouraged to negotiate an

agreement acceptable to U. T. System Administration or

applicable U. T. System institution to transfer or grant

appropriate access to the Board of Regents’ ownership

rights or other rights in the intellectual property resulting

from such arrangements to the sponsor or the sponsor’s

designee. Any such agreement shall be negotiated:

(a) In accordance with the needs and preferences of

the parties, as best may be accomplished;

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(b) With flexibility and adaptability in mind;

(d) In a manner which identifies the benefits that

accrue to U. T. System institutions as set forth by

Section 15.2.

12.2 Public Sources. Intellectual property resulting from

research supported by a grant or contract with the

government (federal and/or state) or an agency thereof is

owned by the Board of Regents.

12.3 Nonconformance with Intellectual Property Guidelines.

Approval by a U. T. System institution under Section 15.2

of grants and contracts containing ownership and other

provisions inconsistent with this Rule and other policies

and guidelines adopted by the Board of Regents,

including, but not limited to, The University of Texas

Systemwide Policy UTS 125, Guidance for Negotiating

Research Agreements with Sponsors and Processing

Research and Intellectual Property Agreements is

permissible, as it implies a decision that the benefit and

value to the U. T. System or any U. T. System institution

from receiving the grant or performing the contract

outweighs the impact of any nonconforming provisions on

the intellectual property policies and guidelines of the U.

T. System or any U. T. System institution, such as The

University of Texas Systemwide Policy UTS 125,

Guidance for Negotiating Research Agreements with

Sponsors and Processing Research and Intellectual

Property Agreements.

12.4 Conflicting Provisions. Subject to approval as described

in Section 12.3, the intellectual property policies and

guidelines of the U. T. System or any U. T. System

institution are subject to, and thus amended and

superseded by, the specific terms pertaining to

intellectual property rights included in state and/or federal

grants and contracts, or grants and contracts with

nonprofit and for-profit nongovernmental entities or

private donors, to the extent of any such conflict.

12.5 Cooperation with Necessary Assignments. Those

persons subject to this Rule whose intellectual property

creations result from (a) a grant or contract with the

government (federal and/or state), or any agency thereof,

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(b) a grant or contract with a nonprofit or for-profit

nongovernmental entity, or (c) private gift to the U. T.

System or any U. T. System institution, shall promptly

execute and deliver such documents and other

instruments as are reasonably necessary for the U. T.

System or any U. T. System institution to discharge its

obligations, expressed or implied, under the particular

agreement.

12.6 Sharing of Royalty Income. In the event that two or more

persons who are entitled to share royalty income or

equity cannot agree in writing on an appropriate sharing

arrangement, the institution’s president shall determine

that portion of the royalty income (or equity) to which the

creators are entitled under the circumstances and such

amount will be distributed (or issued) to them

accordingly. In the event that the creators are located at

two or more U. T. System institutions and cannot agree,

such royalty (or equity) distribution decision shall be

made by the involved institutions’ presidents (or their

respective designees). In the further event that the

involved presidents cannot agree, then the Chancellor

shall decide and his/her decision shall be binding on the

creators.

12.7 Geographical Scope of Protection. A decision by the

U. T. System or any U. T. System institution to seek

patent or other available protection for intellectual

property covered by Section 9 shall not obligate the U. T.

System or any U. T. System institution to pursue such

protection in all national jurisdictions. The U. T. System's

decision relating to the geographical scope and duration

of such protection shall be final.

Sec. 13 Equity Interests.

13.1 Agreements with Business Entities. The U. T. System or

any U. T. System institution may receive equity interests

as partial or total compensation for the conveyance of

intellectual property rights. The institution where the

intellectual property was created may elect, at its sole

option and discretion, to share an equity interest,

dividend income, or a percentage of the proceeds of the

sale of an equity interest with the creator(s). The U. T.

System or any U. T. System institution may also receive

equity interests in a business entity as consideration for

the institution's role as a founder, or for other

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contributions made to the business entity other than as a

licensor, and the institution shall not be obligated to share

such equity interests with the creator(s). The U. T.

System or any U. T. System institution may also, but

shall not be obligated to, negotiate an equity interest on

behalf of any employee who conceived, created,

discovered, invented, or developed intellectual property

owned by the Board of Regents that is the subject of an

agreement between the U. T. System or any U. T.

System institution and a business entity relating thereto.

13.2 Creator Holding Equity and Managing Conflict of Interest.

Employees of the U. T. System Administration or any

U. T. System institution who conceive, create, discover,

invent, or develop intellectual property may hold an

equity interest in a business entity that has an agreement

with the U. T. System or any U. T. System institution

relating to the research, development, licensing, or

exploitation of that intellectual property only so long as

the institution where the intellectual property was

developed is in full compliance with the requirement to

have, implement, and enforce for that employee an

effective conflict of interest management plan as set forth

in the U. T. System Office of General Counsel’s

Procedure for Managing Conflicts of Interest. In any case

where an actual conflict of interest is found, the employee

may be required to divest the equity interest or terminate

affected research.

Sec. 14 Conflicts of Interest.

14.1 Approval to Serve as Officer or Director. Any individual

subject to Sections 2, 3, 4, or 8 who conceives, creates,

discovers, invents, or develops intellectual property may

serve, in his/her individual capacity, as a member of the

board of directors or other governing board or as an

officer or an employee (other than as a consultant) of a

business entity that has an agreement with the U. T.

System or any U. T. System institution relating to the

research, development, licensing, or exploitation of that

intellectual property only so long as the institution where

the intellectual property was developed is in full

compliance with the requirement to have, implement, and

enforce for that individual an effective conflict of interest

management plan as set forth in the U. T. System Office

of General Counsel’s Procedure for Managing Conflicts

of Interest. In any case where an actual conflict of

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interest is found, the individual may be required to

terminate the business relationship or the relevant

research.

14.2 Request for Employee to Serve as Officer or Director.

When requested by the Board of Regents, an employee

may serve on behalf of the Board of Regents as a

member of the board of directors or other governing

board of a business entity that has an agreement with the

U. T. System or any U. T. System institution relating to

the research, development, licensing, or exploitation of

intellectual property, but may not accept any

consideration offered for service on such board.

14.3 Report of Equity Interest and Service as Officer or

Director. Any individual subject to this Rule must report

in writing to the president of the institution the name of

any business entity in which the person has an interest or

for which the person serves as a director, officer, or

employee, and shall be responsible for submitting a

revised written report upon any change in the interest or

position held by such person in such business entity. The

U. T. System institution or its office of technology

commercialization will file a report by October 1 of each

year with the Office of the Board of Regents for

transmittal to the Comptroller of Public Accounts as

required by Section 51.912 and Section 51.005, Texas

Education Code.

Sec. 15 Execution of Documents Related to Intellectual Property.

15.1 Execution of Agreements. Agreements that grant an

interest in the Board of Regents’ intellectual property,

including, but not limited to, option and license

agreements and contracts with corporate sponsors, may

be executed and delivered in accordance with the

provisions of Regents’ Rule 10501, after any required

review by the U. T. System Office of General Counsel.

15.2 Agreements That Do Not Conform to the Rules. Any

agreement that deviates substantially from this Rule or

other policies and guidelines adopted by the Board of

Regents, including, but not limited to, The University of

Texas Systemwide Policy UTS 125, Guidance for

Negotiating Research Agreements with Sponsors and

Processing Research and Intellectual Property

Agreements may be executed and delivered as set forth

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above if, in the judgment of the institution’s president and

after any required review by the U. T. System Office of

General Counsel, the benefits from the level of funding

for proposed research and/or other consideration from a

sponsor, licensee, or other party outweigh any potential

disadvantage that may result from the deviation.

15.3 Delegation of Authority. The Chancellor, the appropriate

Executive Vice Chancellor, or the Vice Chancellor and

General Counsel may execute, on behalf of the Board of

Regents, legal documents relating to the Board of

Regents’ rights in intellectual property, including, but not

limited to, assignments of ownership, applications,

declarations, affidavits, powers of attorney, disclaimers,

and other such documents relating to patents and

copyrights; applications, declarations, affidavits, affidavits

of use, powers of attorney, and other such documents

relating to trademarks; and corporate documents related

to the formation of new companies. In addition, the

institution’s president may execute, on behalf of the

Board of Regents, (a) institutional applications for

registration or recordation of transfers of ownership and

other such documents relating to copyrights, and (b)

corporate documents related to the formation of new

companies (including, but not limited to, documents

memorializing equity interests received under Section 13

and stockholder consents that may subsequently be

sought in connection therewith), if first reviewed and

approved by (i) the U. T. System Office of General

Counsel, or (ii) the institution’s outside counsel working

under a U. T. System Office of General Counsel-

approved outside counsel agreement.

3. Definitions

None

4. Relevant Federal and State Statutes

35 U.S.C. 18 – Patent Rights in Inventions Made with Federal Assistance

(The Bayh Dole Act of 1980, as amended)

Texas Education Code Section 51.005 – Reports

Texas Education Code Section 51.912 – Equity Ownership: Business

Participation

The University of Texas System 
Rules and Regulations of the Board of Regents  Rule: 90101 
 
 
       
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Texas Education Code, Chapter 153 – Centers for Technology 
Development and Transfer   
 
5.  Relevant System Policies, Procedures and Forms 
 
Regents’ Rules and Regulations, Rule 10501 – Delegation to Act on 
Behalf of the Board of Regents  
 
The University of Texas Systemwide Policy UTS 125, Guidance for 
Negotiating Research Agreements with Sponsors and Processing 
Research and Intellectual Property Agreements 
 
U. T. System Office of General Counsel’s Procedure for Managing 
Conflicts of Interest 
 
6.  Who Should Know 
 
  Administrators 
Faculty 
Staff 
Students 
 
7.  U. T. System Administration Office(s) Responsible for Rule 
 
  Office of General Counsel 
 
8.  Dates Approved or Amended 
 
Regents’ Rules Revision History 
 
9.  Contact Information 
 
  Questions or comments regarding this Rule should be directed to: 
 
•  [email protected] 